Appeal No. 96-0126
Application 07/942,400
values within the here disclosed and claimed range (i.e., 0 to
about -5 dynes per centimeter). On the other hand, were the
equation amended so that ?-1? reads ?+1?, the resultant values
for w would be positive in nature and far outside of the
appellants’ disclosed and claimed range.
It is well settled that claim terminology must accurately
define an applicant’s invention in order to comply with the
second paragraph of 35 USC § 112. In re Knowlton, 481 F.2d
1357, 1366, 178 USPQ 486, 492 (CCPA 1973). Because the
equation defined by independent claim 1 is inaccurate in the
two respects discussed above, this claim and all of the other
claims on appeal (each of which refers back to claim 1) are
hereby rejected under the second paragraph of 35 USC § 112 for
failing to particularly point out and distinctly claim the
appellants’ invention. As indicated earlier, we make this new
rejection pursuant to our authority under 37 CFR § 1.196(b).
Normally, a claim which fails to comply with the second
paragraph of § 112 will not be analyzed as to whether it is
patentable over the prior art. This is because such an
analysis would necessarily require speculation with regard to
the metes and bounds of the rejected claim. See In re Wilson,
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